A year ago, I posted a blog that featured a case that had appealed to the U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”) and the Court reversed a decision by the Trademark Trial and Appeal Board (“TTAB” or the “Board”). The case of In re St. Helena Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential], expanded the “something more” standard. I see more and more cases relying on the “something more” standard to prevail in likelihood of confusion disputes. To provide readers with a thorough understanding of this standard, it is necessary to review the cases of In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003) and Jacobs v. International Multifoods Corp., 668 F.2d 1234 (CCPA 1982) (the “Jacobs” case).
The Coors Brewing Company (“Coors”) was seeking to register the mark BLUE MOON & Design for a brand of beer. The Examining Attorney refused the trademark application for BLUE MOON & Design on the ground that it would cause a likelihood of confusion with another registered mark for BLUE MOON & Design for restaurant services. The Board upheld the Examiner’s refusal based on the determination that the two marks were similar for likelihood of confusion purposes and that restaurant services and beer were related goods and services.
The Federal Circuit court agreed with the determination that the trademarks were similar with regard to appearance, sound, meaning and commercial impression, but disagreed with the conclusion that restaurant services were related to beer. The Federal Circuit compared the two design marks and found that generally the marks were similar due to the literal portion of the marks being identical “BLUE MOON”. However, there were differences in the design logos that dictated that the finding of similarity between the marks was less important.
The Court in Coors refers to the earlier decision in Jacobs to highlight the ruling that restaurants serving both food and beverages will not be enough to render food and beverages related to restaurant services for purposes of likelihood of confusion. The Jacobs Case held that something more needs to be demonstrated to prove a likelihood of confusion between even identical marks used for food products and restaurant services. Coors offered exceptionally persuasive evidence on the issue of whether beer is related to restaurant services.
Coors pointed out that in the United States there are about 1,450 brewpubs (microbreweries and regional specialty breweries). In contrast there are about 815,000 restaurants. This means that even if all the brewpubs offered restaurant services, this would only constitute approximately 18 one-hundredths of one percent of all brewpubs (and microbreweries and regional specialty breweries) also offering restaurant services. In other words, there is not a substantial overlap of beer and restaurant services emanating from one source. Coors’ evidence demonstrated that the amount of overlap between the sources of restaurant services and beer is de minimis. This being the case, then one cannot conclude that restaurant services and beer are sufficiently related to support a finding of likelihood of confusion.
Similar to the evidence presented in Coors, if there was a 2(d) Refusal and the trademark applicant can produce evidence that there is only a small or de minimis percentage of over lap in source between the goods and services in question, the applicant should be able to overcome the Refusal, assuming that the Refusal was based on relatedness and that the other du Pont factors weighed in favor of the applicant. In subsequent cases, it has even been held that when goods and services are used together, this does not show relatedness between the goods and services.
When the relatedness of the goods and services is less evident, the USPTO must show “something more” than the mere fact that the goods and services are used together. See In re St. Helena’s Hospital, 113 USPQ2d 1082 (Fed. Cir. 2014) [precedential]. The “something more” standard applies not only to restaurant services, but also to circumstances when the relatedness of the goods and services is not evident, well known or generally recognized. Moreover, the “something more” requirement will not be satisfied by showing that both goods and services are advertised on the internet or are sold in big department stores or drug stores. Countering arguments based on likelihood of confusion grounds can be challenging, if you need assistance with defending against a Refusal, kindly contact our office for a courtesy consultation.